Factors to be Considered in Assessing Likelihood of Confusion in Taiwan

The Taiwan Trademark Act stipulates that any mark identical with or similar to a mark registered or filed earlier by another shall be unregistrable. In assessing whether a junior mark is similar to a senior mark, the two marks are generally viewed in their entireties. However, in a recent opposition case, questions have arisen as to whether a junior mark incorporating several discrete components respectively similar to a series of senior marks will be deemed a similar mark, and whether the form under which a senior mark is used in commerce will be considered in the assessment of likelihood of confusion. 

In the case of interest, the opposed mark is a colored, two-dimensional mark consisting of Chinese and Japanese characters, a fish device, and a wave-pattern background in addition to the registrant’s house logo. The opposition was based on a number of senior marks, namely, a Japanese character mark, two composite marks each consisting of characters and a wave device, and two fish device marks. Both parties’ marks are designated for use on condiments in Class 30.

The IP Court held that the opposed mark is confusingly similar to the based-upon marks for containing a similar wave pattern, similar Japanese characters, and a similar fish device. The Court also took into consideration the opposer’s combined use of the based-upon marks on product packaging and found that the orange background color of the opposed mark is similar to that of the opposer’s product packaging. According to the Court, although the opposed mark is not exactly the same as the based-upon marks, it is an assemblage of the based-upon marks as they are registered and used.

It is not stipulated in the Trademark Act, nor is it stated in the examination guidelines, that the form under which a mark is used in commerce may be a factor to be considered in the test of likelihood of confusion. As such, the Court’s ruling is quite out of the norm. Whether this ruling would be followed is worth noting. Nevertheless, in order to avoid any dispute, if several marks are presumably to be used in combination, it is advisable to obtain registration for a combination mark, in addition to registering the separate marks.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.